Ex Parte Ishizuka et al

Patent Trial and Appeal Board

Oct 6, 2016

11576598 (P.T.A.B. Oct. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111576,598 10/21/2008
20995 7590 10/11/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Hirotoshi Ishizuka
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
UNIU79.084APC 3881
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
10/11/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROTOSHI ISHIZUKA, MASAKA TSU TAKATA,
KATSUMORI NAGURA, MASAHIKO HIROSE,
SHINY A NISHIYAMA, and HIROSHI MATSUO
Appeal2015-002339
Application 11/576,598
Technology Center 1700
Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
JEFFREY R. SNAY, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, 4-8, 10-12, and 14-17. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a process for producing a reverse osmosis
membrane. Claim 1 is illustrative:
1. A process for continuously producing a composite
reverse osmosis membrane comprising a polyamide skin layer
and a porous support for supporting the polyamide skin layer,
the method comprising:
Appeal2015-002339
Application 11/576,598
A) applying a fixed amount of an aqueous solution a containing
a compound having two or more reactive amino groups to form
a covering layer of an aqueous solution on the porous support
while moving the porous support, wherein the aqueous solution
a is applied using a microgravure coater or a slot die coater;
B) permeating the aqueous solution a in micro pores of the
porous support by holding the covering layer of the aqueous
solution on the porous support for 0.2 to 15 seconds;
C) substantially completely removing the covering layer of the
aqueous solution while holding the aqueous solution a within
the micro pores of the porous support; and
D) after C), forming the polyamide skin layer by applying an
organic solution B containing a polyfunctional acid halide onto
the surface of the porous support to make the aqueous solution
a contact with the organic solution B for interfacial
po 1 ymerization.
Nielsen
Li
The References
us 5,547,701
us 6,162,358
Aug. 20, 1996
Dec. 19, 2000
May 20, 2002 Rice US 2002/0063093 Al
The Rejection
Claims 1, 2, 4--8, 10-12, and 14--17 stand rejected under
35 U.S.C. § 103 over Li in view of Rice and Nielsen.
OPINION
We affirm the rejection.
The Appellants argue the claims as a group (App. Br. 5-11). We
therefore limit our discussion to one claim, i.e., claim 1. Claims 2, 4--8, 10-
12, and 14--17 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv)
(2012).
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Appeal2015-002339
Application 11/576,598
Li forms a reverse osmosis membrane by applying to a porous
substrate's surface, by a method which can be slot die coating, an aqueous
solution of a polyamine reactive to acyl halides, maintaining contact of the
solution with the surface for 0.1 second to 10 minutes, preferably 1 to
100 seconds, during which time the surface becomes impregnated with the
polyamine solution, removing the excess solution by a technique which can
be air knifing, and then applying to the surface a nonaqueous solution of an
amine-reactive polyacyl halide (col. 3, 11. 33--40; col. 7, 11. 3-31). "The
amine solution coating on the porous substrate reacts with the acyl halide to
form a polymerized reaction product [polyamide] that is believed to be
formed both on and within the porous top surface of the porous substrate"
(col. 3, 11. 40--44).
The Appellants assert that "Li provides no direction regarding
applying a fixed amount of polyamine solution" (App. Br. 6).
The Appellants' Specification states that "a die coater in general has
high fixed-amount application capability and allows easy adjustment of
applied thickness, since the slot die coater is a pre-metering type die coater,
it has an advantage that even the clearance between the support surface and
the die lip that has been set wider, which is referred to as a gap height, can
easily give neither application unevenness nor solution cut" (Spec. i-f 44).
Thus, Li's slot die coater (col. 7, 11. 3-7), like the Appellants' slot die coater,
applies a fixed amount of aqueous polyamine solution.
The Appellants assert that Li discloses a dipping method (Reply
Br. 3--4) and "teaches applying in excess and removing the excess by rolling
the top surface with a squeegee roller" (App. Br. 6; Reply Br. 2).
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Appeal2015-002339
Application 11/576,598
Li discloses applying the aqueous polyamine solution with a slot die
coater (col. 7, 11. 3-7) and removing the excess solution with an air knife
(col. 3, 11. 36; col. 7, 11. 14--16), both of which are among the Appellants'
techniques (Spec. i-fi-143, 50).
The Appellants assert that Li does not disclose a process which
"yields a composite reverse osmosis membrane that not only possesses high
salt blocking rates and the flux, but also significantly reduced residual
amounts of m-phenylenediamine (MPD). Specification at paragraphs [0023]
and [0084]" (App. Br. 9).
Those portions of the Appellants' Specification state that the
Appellants' process reduces the amount of unreacted MPD compared to
conventional immersion coating. Because Li's application of the aqueous
polyamine solution by slot die coating and removal of the excess solution by
air knifing (col. 3, 11. 33-36; col. 7, 11. 3-17) are among the Appellants'
techniques (Spec. i-fi-143, 50), Li's process can achieve the reduction in
unreacted MPD provided by the Appellants' process.
The Appellants assert that Li does not "teach that permeation time is a
result-effective variable" (App. Br. 10).
"A person of ordinary skill is also a person of ordinary creativity, not
an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In
making an obviousness determination one "can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ." KSR, 550 U.S. at 418.
Li points out the known tradeoffbetween solute rejection and flux
("An area of continuing interest and need is to provide reverse osmosis
membranes having greatly improved flux while maintaining solute rejection
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Appeal2015-002339
Application 11/576,598
characteristics" (col. 1, 11. 44--46)). Li's disclosure of a time of contact
between the aqueous polyamine solution and the porous substrate's surface
of 0.1 second to 10 minutes, preferably 1 to 100 seconds, during which the
porous surface becomes impregnated with the aqueous polyamine solution
before removal of the excess solution (col. 7, 11. 7-17), would have led one
of ordinary skill in the art, through no more than ordinary creativity, to
arrive at an optimized contact time such as 0.2 to 15 seconds within those
ranges based upon the desired balance between solute rejection (improved
by increased contact time) and flux (improved by decreased contact time).
The Appellants assert, in reliance upon the Ishizuka Declaration
(filed June 14, 2011) that "the permeation time is a critical feature for
obtaining membranes with both a superior flux and salt-blocking rate"
(App. Br. 8-11).
We have begun anew and determined, based on all the evidence and
arguments before us, whether the Examiner's rejection is well founded. See
In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). For the following
reasons the Declaration evidence, when considered with Li, does not support
a conclusion of nonobviousness of the claimed process.
First, it is not enough for the Appellants to show that the results for
the Appellants' invention and the comparative examples differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324(CCPA1973); In re Klosak, 455 F.2d 1077,
1080 ( CCP A 1972 ). The Declaration evidence shows that as the aqueous
solution retention time increases, the salt blocking rate increases and the
permeation flux decreases. The evidence, therefore, illustrates the tradeoff
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Appeal2015-002339
Application 11/576,598
between salt blocking rate and flux which one of ordinary skill in the art
would have expected.
Second, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). The Appellants' claims generally
encompass polyfunctional acid halide-containing organic solutions and
aqueous solutions containing two or more reactive amino group-containing
compounds, whereas the Declaration evidence is limited to one aqueous
solution and one organic solution. We find in the evidence of record no
reasonable basis for concluding that the great number of materials
encompassed by the Appellants' claims would behave as a class in the same
manner as the particular materials tested. See In re Lindner, 457 F.2d 506,
508 (CCPA 1972); In re Susi, 440 F.2d 442, 445--46 (CCPA 1971).
For the above reasons we are not persuaded of reversible error in the
rejection. 1
DECISION/ORDER
The rejection of claims 1, 2, 4--8, 10-12, and 14--17 under
35 U.S.C. § 103 over Li in view of Rice and Nielsen is affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
1 The Appellants' argument that the Examiner introduced new grounds of
rejection in the Examiner's Answer (Reply Br. 10-14) concerns a matter
which is petitionable to the Technology Center Director, not appealable to
the Board. See MPEP § 1002.02(c)(6).
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